AI as Inventor(s) – Court of Appeal Denies DABUS
We recently published on our website an article discussing various decisions of patent offices around the world to either refuse or allow two patent applications designating an artificial intelligence machine, named DABUS, as the inventor.
In this article, we will follow the progress of the applications in the UK, with the most recent development being the highly anticipated judgement from the Court of Appeal which was handed down on 21 September 2021 ( EWCA Civ 1374).
History of The Applications in the UK
Dr Thaler applied for two UK patent applications designating DABUS as inventor. The UKIPO did not accept this and refused the applications because they were deemed withdrawn, which Dr Thaler appealed in a hearing (see the UKIPO decision: BL O/741/19). In this hearing decision, the UKIPO held that the two applications were deemed withdrawn because the statement of inventorship form did not satisfy Section 13(2) of the Patents Act 1977. The failure was on two grounds: DABUS was not a person and so cannot be the inventor and, separately, Dr Thaler the applicant, was not entitled to apply for the patents as no right of entitlement to apply could be derived merely by virtue of owning DABUS.
Following failure before the UKIPO, Dr Thaler appealed before the High Court which dismissed the appeal and upheld the decision of the UKIPO not to allow the application to proceed. Details of this case can be found in the earlier mentioned briefing on our website.
Court of Appeal
This leads us to the most recent development in this case; after failure in the High Court, Dr Thaler subsequently appealed to the Court of Appeal.
The appeal asked three questions:
i) Does the 1977 Act require that an inventor to be a person?
ii) What is s.13 of the 1977 Act for, and how does it work?
iii) What is the right response to the information Dr Thaler has provided under s.13(2)?
In response to question i), it was held in paragraphs  to  that “[w]ithin the meaning of the 1977 Act the "inventor" is the person who actually devised the invention” and “[a]ssuming the machine is the entity which actually created these inventions, it has no right to be mentioned as the inventor and no right to employee's compensation under s39”. To arrive at this decision, the history of the concept of an inventor, and the history of the relationship and distinction between applicant and inventor was reviewed in paragraphs  to  and is summarised in paragraph (i) to (iv). For the purposes of the appeal, there was no dispute that DABUS actually created the invention, but that because it was not a person, the 1977 Act would not permit it to be named as inventor.
Turning to question ii), a summary of s.13, and specifically s.13(2) is required to fully understand this point. S.13(2) states:
(2) Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement—
(a) identifying the person or persons whom he believes to be the inventor or inventors; and
(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent;
and, if he fails to do so, the application shall be taken to be withdrawn.
It was held that Dr Thaler, even though he had genuinely stated in good faith that he believed DABUS to be inventor, did not satisfy the requirements of s. 13(2)(a) because DABUS is not a person and so the identification of such could not be valid.
In response to the question of entitlement of the right to apply for the patent and s. 13(2)(b), Dr Thaler submitted that because he owned the machine that produced the invention, he owned any inventions created by the machine. Arnold LJ dismissed this line of argument and put to Dr Thaler that ”[t]his is really an argument about what the law should be, rather than about the present state of the law” .
Accordingly, it was held that because DABUS is not a person, DABUS has no rights that can be conferred to someone other than the inventor, such as an employer.
It is worth noting that Birss LJ held that Dr Thaler did satisfy the requirements of S13(2) because he has provided the information that was required honestly.
Finally, to answer question iii), the Court of Appeal found that the correct response to non-compliance to s. 13(2) means that the application was deemed withdrawn.
In this decision, the Court of Appeal was asked to rule on the question of whether or not AI can be named as an inventor for a UK patent and the consequences thereof. Their interpretation was that it could not be due to the foregoing and that it was right to deem the applications as withdrawn.
It is not clear whether or not this decision will be appealed in the Supreme Court, but this case leaves much discussion about what should and should not be in terms of the current state of the law with regard to artificial intelligence. We look forward to seeing developments in the future and will report here when it arrives.